December 29, 2022: administrative proceedings for revocation and invalidity of Italian trademarks before the Italian trademark office (UIBM) enter into force

28 December 2022 Trademarks David Devic

As from December 29, 2022 it will be possible to file invalidity and revocation proceedings of Italian trademark registrations and Italian designations of international registrations before the Italian Patent and Trademark Office (hereinafter “UIBM”).

Decree No. 180 of 19 July 2022 of the Ministry of Economic Development (recently renamed as Ministry of Enterprise and Made in Italy) was published in the Official Gazette on November 29, 2022. Such a decree amends the implementing regulations of Italian Industrial Property Code to introduce and regulate these administrative proceedings.

These administrative proceedings, whose introduction into the legal systems of European union member countries was provided by the EU Directive 2015/2436 to approximate the laws of the Member States relating to trade marks, had been highly expected in Italy. Italy up to now was in fact one of the few European Union countries where actions for invalidity or revocation of trademark registrations were only available before the ordinary courts.

Administrative revocation and invalidity proceedings provide a new cost-effective tool that will simplify and accelerate the resolution of disputes relating to registered trademarks in Italy.

In the following we provide some highlights on some features of these new administrative proceedings.

The official fees for filing the applications for revocation and invalidity before the UIBM have been set to the amount of €500.

Revocation actions may be based on the following grounds:

  • lack of use for five years;
  • the trademark has become a common name in trade;
  • the mark has become misleading

Invalidity actions against registered Italian trademarks may be filed on the basis of absolute grounds or relative grounds.

The absolute grounds are:

  • lack of distinctive character;
  • deceptiveness of the trademark;
  • violation of the public policy or accepted principles of morality;
  • violation of regulations about designations of origin, geographical indications, traditional terms for wine, traditional specialties guaranteed or the denominations of plant varieties.

The relative grounds of invalidity are:

  • risk of confusion with an earlier an earlier trademark protected for identical or similar products/services, if due to the identity/similarity of the signs and the identity/similarity of the products/services there exists a likelihood of confusion, which may also include the likelihood of association;
  • identity with / similarity to an earlier trademark protected in Italy and enjoying reputation and where the use without due cause of the trademark applied for would take unfair advantage of, or be detrimental to the distinctive character or the repute of the same;
  • identity with, or similarity to an earlier trademark which is well known pursuant to article 6bis of the Paris Convention;
  • the filing of the trademark by an agent or a representative without the consent of the owner.

It must be noted that applications for declaration of invalidity cannot be grounded neither on baith faith or on earlier unregistered trademarks, other signs used in the normal commercial practice, on earlier copyrights and designs. In such cases it is still necessary to act before ordinary courts.

As to the procedure, the applications for declaration of revocation and invalidity may be filed electronically or on paper.

It is mandatory to fill in the forms made available by the UIBM.

The application for invalidation or revocation before UIBM, unlike in judicial actions, cannot be directed against multiple registrations, nor invalidity and revocation can be filed within the framework of a single proceeding before the UIBM.

Differently from the opposition proceedings, all arguments and evidence must be produced when the application is filed, as it is not allowed filing further documents at a later stage.

The new articles of the Implementing Regulation envisage an initial period (so called cooling off period) in which the parties may find a settlement agreement.
If no agreement is reached between the parties, the owner of the challenged trademark shall file the observations in defense and related evidence within the following sixty days and, in case of invalidity proceedings, it shall also request the proof of use of the earlier trademark on which the invalidity action is based, if it is has been registered for more than five years. If such statement is filed, the other side will be given a term to file a reply.

The Implementing Regulation, also provides that, differently from the opposition proceedings, the parties can jointly apply for the suspension of the proceedings up to 24 months.

As to the duration of these new proceedings, the new article 63-decies of the Implementing Regulation provides that the UIBM shall issue a decision on revocation and invalidity applications within 24 months from the date of the petition, if no suspensions are required.

On a final note, the Decree set the amount of the reimbursement of legal fees in favor of the winning party at a maximum of 600 euros.

Please address any clarification, request of assistance or information on the new procedures to your usual contact at Jacobacci & Partners.


Sources "Jacobacci & Partners"